New York Trademark Attorney Blog
The Trademark Trial and Appeal Board (the “Board” or “TTAB”) recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential]. In this case, it was a bit surprising that the Board justified its decision based solely on the marks being sufficiently different while finding the other relevant factors weighing in favor of finding a likelihood of confusion. The decision underscores a point that cannot be emphasized enough in trademark practice; descriptive marks severely restrict the scope of protection for those terms. The Board focused on the descriptive and generic terms in the registered mark.
The applicant was seeking registration on the Principal Register for the mark ANTARTICA MARATHON, in standard characters for “travel services, namely, organizing and arranging travel, travel tours, excursions, and sightseeing travel tours; providing travel guide and travel information services; and making transport reservation.” The applicant claimed acquired distinctiveness under 2(f) of the Trademark Act. The Examining Attorney accepted the 2(f) claim. However, the Examining Attorney cited the mark ANTARCTIC ICE MARATHON & 100K and Design for “Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races,” as likely to cause confusion with the applicant’s mark. The cited registration had a disclaimer for the term “ANTARCTIC ICE MARATHON & 100K” and for the design of the geographic representation of Antarctica. Upon issuance of a final refusal, the applicant appealed the refusal to register.
In its decision, the Board focused first on the marks. The shared terms in the parties’ marks were variations of “Antarctica” and “Marathon”. These terms are weak in relationship to the services. Registrant had to disclaim the terms since one describes the geographic location of the services and the other the type of race. Determining the strength of the terms is an important part of the analysis. See our recent blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, wherein it was emphasized, if shared terms are descriptive, additions to a mark may suffice to avoid likelihood of confusion. See also, the Trademark Manual Of Examining Procedure §1207.01(b)iii which discusses this point.
This rule emphasizes that if the terms common to both marks are generic or descriptive, it is unlikely that the terms will be perceived by consumers as source indicators, and that other differences between the marks may be adequate to obviate confusion. In other words, if consumers will not rely on the shared terms to distinguish source, additional terms in the mark may be able to differentiate the sources. Since the registrant’s mark contains generic and highly descriptive terms, the mark will receive a narrow scope of protection. The board concluded that applicant’s mark did not fall within the narrow scope of protection and therefore, the first du Pont factor weighed against finding confusion.